As the readers will know, one of the possible methods used by the European Patent Office (“EPO”) to examine inventive step is the so-called “problem & solution” approach, which has three parts: i) determining the closest prior art; ii) defining the technical problem that the invention seeks to resolve; and (iii) examining whether or not, at the priority date, the invention would have been obvious to the person skilled in the art. This methodology was developed by the EPO many years ago to try to correct the hindsight risks inherent to examining the inventive step of an invention in light of the patent that describes that invention. To prevent these risks, the EPO’s Board of Appeal has consistently held that, once an invention exists, it can often be shown that the skilled person could have made it by combining different elements in the prior art, but such arguments had to be ruled out as the product of ex post facto analysis (for example, Decision T 564/89).

 Due to the relatively scarce number of precedents on patent cases from the Supreme Court, in recent years, Spanish Courts have shown a natural tendency to rely on the “case law” from the EPO’s Board of Appeal which, in turn, has made the “problem & solution approach” rather popular also in Spain. A recent example can be found in judgment number 43/2013 of 29 April 2013 from Barcelona Commercial Court number 4 (JUR/2013/148370), which confirmed the inventive step of patent ES 2.344.241 applying this methodology. Interestingly, in this particular case it was not necessary for the Court to arrive at the third part of the “problem & solution approach.” This was because the defendant, who had filed a counterclaim seeking the revocation of the patent, failed to identify what the problem was that the invention was seeking to solve. In particular, the Court noted that the expert used by the defendant had questioned the inventive step of the patent because, in his opinion, the invention was “anticipated” by US patent 5.952.106 (“D1”). However, when examining “novelty”, which had also been questioned by the defendant, the Court had already rejected the argument that D1 would anticipate claim 1 of patent ES 2.344.241. Against this background, the Court concluded that the attack against inventive step should also fail. To further cement the legal grounds for the decision, the Judge added that the problem that D1 was seeking to solve had nothing to do with the problem solved by patent ES 2.344.241.

In conclusion, this recent decision, which followed the same methodology used by Spanish Courts in other cases, suggests that the “problem & solution approach” is here to stay.


Kluwer IP Law
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